Ex parte Kishi et al.

Board of Patent Appeals and Interferences

Nov 24, 1998

07835374 (B.P.A.I. Nov. 24, 1998)

Application for patent filed February 14, 1992. 1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KIYOMI KISHI,
SETSUO TSURUTA, TOSHIYA OSHIMA
and
TOSHIHIRO EGUCHI
_____________
Appeal No. 95-4187
Application 07/835,3741
______________
HEARD: November 3, 1998
_______________
Appeal No. 95-4187
Application 07/835,374
2
Before URYNOWICZ, THOMAS and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 1, 3 through 8, 11, 14 through 17 and 22
through 25. Claims 2, 9, 10, 12, 13 and 18 through 21 have
been allowed.
Appellants' invention relates to a problem-solving
method and a problem-solving system using a knowledge-based
computer system for restoring a train schedule such that an
identical interval between running trains is guaranteed when
disturbances occur. The method and system require
circumstantial judgement.
Independent claim 1 is reproduced as follows:
1. A problem solving method comprising the
processing steps of:
storing element knowledge each represented as a data
block for denoting a goal or a subgoal or a strategy hier-
archically organized for problem solving, plan generation and
user guiding;
Appeal No. 95-4187
Application 07/835,374
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setting harmonizing knowledge represented as a data
block for selecting and/or changing the element knowledge;
storing each content of the harmonizing knowledge in
a memory called a slot;
selecting and/or changing the element knowledge in
accordance with the contents of the harmonizing knowledge; and
executing a plan generation and a problem solving by
use of the element knowledge thus selected and/or changed.
The reference relied on by the Examiner is as
follows:
Setsuo Tsuruta et al. (Tsuruta), "A KNOWLEDGE-BASED
INTERACTIVE TRAIN SCHEDULING SYSTEM -- AIMING AT LARGE-SCALE
COMPLEX PLANNING EXPERT SYSTEMS," Int'l Workshop on Artificial
Intelligence for Indus. Applications, 490-495, IEEE (1988).
Claims 1, 3 through 8, 11, 14 through 17 and 22
through 25 stand rejected under 35 U.S.C. § 102 as being
anticipated by Tsuruta.
Appeal No. 95-4187
Application 07/835,374
Appellants filed an appeal brief on April 25, 1995. We2
will refer to this appeal brief as simply the brief.
Appellants filed a reply appeal brief on September 11, 1995.
We will refer to this reply appeal brief as the reply brief.
The Examiner stated in the Examiner’s letter mailed October
23, 1995 that the reply brief has been noted and the
Examiner's position is unchanged. Therefore, the reply brief
has been entered and considered by the Examiner.
4
Rather than repeat the arguments of Appellants or
the Examiner, we make reference to the briefs and the answer2
for the respective details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 1, 3 through 6 and 8, 11,
14 and 22 are anticipated under 35 U.S.C. § 102 by Tsuruta.
However, we do not agree with the Examiner that claims 7,
15 through 17 and 23 through 25 are properly rejected under
35 U.S.C. § 102.
Appeal No. 95-4187
Application 07/835,374
5
At the outset, we note that Appellants have
indicated on page 3 of the brief that claims 1, 3-8, 11, 14-17
and 22-25 cannot be grouped together. We note that Appellants
have argued claims 7, 8, 11, 14 through 17 and 23 through 25
separately. However, we note that Appellants have not argued
claims 1, 3 through 6 and 22 separately as per 37 CFR §
1.192(c)(5) revised Oct. 22, 1993 which was controlling at the
time of Appellants filing the brief. 37 CFR § 1.192(c)(5)
amended October 22, 1993 states:
For each ground of rejection which
appellant contests and which applies to
more than one claim, it will be presumed
that the rejected claims stand or fall
together unless a statement is included
that the rejected claims do not stand or
fall together, and in the appropriate part
or parts of the argument under subparagraph
(c)(6) of this section appel-lant presents
reasons as to why appellant considers the
rejected claims to be separately
patentable.
As per 37 CFR § 1.192(c)(5), which was controlling at the time
of Appellants filing the brief, we will, thereby, consider
Appel- lants' claims 1, 3 through 6 and 22 to stand or fall
together, with claim 1 being considered the representative
Appeal No. 95-4187
Application 07/835,374
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claim. However, we will consider claims 7, 8, 11, 14 through
17 and 23 through 25 separately.
It is axiomatic that anticipation of a claim under
§ 102 can be found only if the prior art reference discloses
every element of the claim. See In re King, 801 F.2d 1324,
1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). "Anticipation
is established only when a single prior art reference
discloses, expressly or under principles of inherency, each
and every element of a claimed invention." RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228
(1984), citing Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983).
Appellants argue on pages 6 through 12 of the brief
that Tsuruta fails to teach the step of setting harmonizing
knowledge represented as a data block for selecting and/or
changing the element knowledge, storing each content of the
harmonizing knowledge in a memory called a slot and selecting
Appeal No. 95-4187
Application 07/835,374
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and/or changing the element knowledge in accordance with the
contents of the harmonizing knowledge. Appellants argue that
Tsuruta teaches that a strategy is selected in accordance with
the contents of an actor instead of using independent objects
representing harmonizing knowledge. In addition, Appellants
argue that Tsuruta does not teach changing the element
knowledge in accordance with the contents of the harmonizing
knowledge.
The Examiner points to Tsuruta's teachings on page
492 and specifically steps 1-3. The Examiner points out that
Tsuruta teaches that a strategy is selected in accordance with
the knowledge contents of an actor. The Examiner argues that
the Tsuruta strategy reads on Appellants' claimed "element
knowledge" and the Tsuruta knowledge contents of the actor
reads on Appel- lants' claimed "harmonizing knowledge."
In the reply brief, Appellants state that they fail
to find any teaching in the steps 1-3 taught by Tsuruta that
the contents of an actor includes harmonizing knowledge.
Appellants argue that the selection is not described as being
Appeal No. 95-4187
Application 07/835,374
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performed based upon data contained within the actor as
alleged by the Examiner.
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998).
We note that Appellants' claim 1 recites "selecting
and/or changing the element knowledge in accordance with the
contents of the harmonizing knowledge" (emphasis added). The
use of the Appellants' claim language, "and/or," reasonably
allows for the reading of claim language as only requiring
selecting the element knowledge in accordance with the
contents of the harmonizing knowledge.
Moreover, when interpreting a claim, words of the
claim are generally given their ordinary and accustomed
meaning, unless it appears from the specification or the file
history that they were used differently by the inventor.
Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d
1573, 1577, 27 USPQ2d 1836, 1840 (Fed. Cir. 1993). Although
an inventor is indeed free to define the specific terms used
Appeal No. 95-4187
Application 07/835,374
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to describe his or her inven- tion, this must be done with
reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir.
1994). Our reviewing court states in In re Zletz, 893 F.2d
319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) that "claims
must be interpreted as broadly as their terms reasonably
allow."
We note that Appellants' specification states that
the harmonizing knowledge 52 shown in Figure 1 includes
"knowledge
for selecting necessary element knowledge therefrom, knowledge
for solving conflicts, if any, existing between element
knowledge 51, and knowledge for altering element knowledge 51
to be suit- able for the current state of the system." Thus,
we find that harmonizing knowledge as used by the Appellants'
specification is knowledge for selecting necessary element
knowledge.
We appreciate Appellants' argument that Tsuruta does
not teach changing the element knowledge in accordance with
the contents of the harmonizing knowledge. However, we find
Appeal No. 95-4187
Application 07/835,374
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that Appellants' claim language only requires selecting the
element knowledge in accordance with the contents of the
harmonizing knowledge. Furthermore, we find that Appellants'
claimed "harmonizing knowledge" covers any knowledge for
selecting necessary element knowledge.
Tsuruta teaches a knowledge-based interactive train
scheduling system. On page 492, first column, Tsuruta teaches
that the system uses a multiple programming paradigm approach
in which the knowledge for the train scheduling is represented
by objects. Tsuruta further teaches strategy objects which
are objects representing strategies to attain goals or
subgoals of train scheduling. Therefore, we find that
Tsuruta's strategy objects meet Appellants' claimed element
knowledge.
Tsuruta further teaches another object called
actors. Actors are actor model knowledge used to select the
strategy. On page 492, first column, Tsuruta teaches that
the actor has knowledge such as goal, state, strategy, etc. as
shown in Figure 1. Tsuruta teaches that the actor models
train dis- patchers. In the second column of page 492,
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Application 07/835,374
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Tsuruta teaches that Figure 2 shows inferences used by actors
to select a strategy object. Thus, we find that Tsuruta's
actor knowledge meets Appellants' claimed harmonizing
knowledge. In addition, we find that Tsuruta teaches
selecting the element knowledge (strategy objects) in
accordance with the contents of the harmonizing knowledge
(actor knowledge) as recited in Appellants' claim 1. Thus, we
find that Tsuruta teaches all of the limitations of
Appellants' claim 1. Therefore, we will sustain the
Examiner's rejection of claims 1, 3 through 6 and 22.
On page 12 of the brief, Appellants argue that
Tsuruta fails to teach that element knowledge is described in
the form of a goal strategy network representing a set having
a network structure and that the set including goal objects of
knowledge, such as knowledge to be obtained for a problem
solution and
lower level subgoals and strategy objects of knowledge, such
as procedures and rules, which are employed to subdivide the
goal and the lower level goals into lower goals for achieving
Appeal No. 95-4187
Application 07/835,374
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the goal and to directly obtain the goal without subdividing
the goal as recited in claim 8. We find that Tsuruta teaches
these limitations in the first column of page 492 in the
section
"b) strategy objects" and on page 491, second column.
Appellants further argue that Tsuruta fails to teach
the step of proposing a result and inputting a result of
judgement conducted by a user as recited in claim 11 and
Tsuruta fails to teach that the harmonizing knowledge can be
set and modified via an input/output device as recited in
claim 14. Tsuruta teaches in the first column of page 491
that the machine shows and asks the user the information
needed and the user can intervene to modify and resume the
machine's automatic planning process or to change the planning
strategy of the machine in order for the machine to cooperate
with a human to obtain common-sense reasoning which cannot be
accomplished by the machine alone. Therefore, we find that
Tsuruta teaches these limitations recited in Appellants'
claims 11 and 14.
Appeal No. 95-4187
Application 07/835,374
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Appellants on pages 12 through 14 argue the specific
limitations recited in claims 7, 15 through 17 and 23 through
25.
We note that the Examiner has not addressed these limitations.
Upon a review of Tsuruta, we fail to find any express
teachings of these limitations.
In view of the foregoing, the decision of the
Examiner rejecting claim 1, 3 through 6 and 8, 11, 14 and 22
under 35 U.S.C. § 102 is affirmed; however, the decision of
the Examiner rejecting claims 7, 15 through 17 and 23 through
25 under 35 U.S.C. § 102 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
Appeal No. 95-4187
Application 07/835,374
14
) BOARD OF
PATENT
) APPEALS AND
) INTERFERENCES
MICHAEL R. FLEMING )
Administrative Patent Judge )
THOMAS, Administrative Patent Judge, Concurring:
I fully concur in the reasoning, findings and
conclusions of my colleagues in affirming-in-part the
rejection of certain claims under 35 U.S.C. § 102. Even under
this section and certainly within the provisions of 35 U.S.C.
§ 103, I would add separately that the first column of page
492 of the reference to Tsuruta indicates that the "actor
models a scheduling expert, or his reasoning process, that is,
models dynamic knowledge or somewhat active acknowledge."
This teaching provides additional dimensions of understanding
from an artisan's perspective of the nature and types of
knowledge that may be applied against the broadly defined
element knowledge and harmonizing knowledge of the claims on
appeal.
Additionally, from my study of the disclosed and
claimed invention, I conclude that all pending claims 1 to 25
Appeal No. 95-4187
Application 07/835,374
15
should be made subject to a rejection under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. It appears to
me that substantially all claims encompass and are so broad as
to be directed to an abstract idea or intellectual concept of
problem-solving without limit. Twenty two of the twenty five
pending claims are not applied in any manner to a train
scheduling environment. It is significant that method claims
1 to 21 and system claims 22 to 25 do not recite an expert
system or computerized system per se. Instead, they merely
recite only broadly defined problem-solving methods or a
system, both of
which expansively encompass mental or thought processes of
storing or memorizing information or such problem solving
using pencil and paper. The claims are directed to abstract
processes of solving problems not necessarily being performed
by a machine or computer; they also do not appear to be
directed to any practical utility except perhaps for dependent
claims 23 through 25. The disclosed train scheduling basis
is not recited in each independent claim on appeal. Even in
Appeal No. 95-4187
Application 07/835,374
16
context, the broadly recited "system" claims 22 through 25 and
their attendant recited "means" are not in my view necessarily
directed to a "machine" within 35 U.S.C. § 100. A "system" is
as much a set of procedures as it is hardware or structure.
The same may be said of the goal strategy network of certain
claims which are said to represent a set having a network
structure, where no true structure or machine is necessarily
required.
JAMES D. THOMAS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
psb
Appeal No. 95-4187
Application 07/835,374
17
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